A South African court has dismissed a trade mark opposition brought by British biscuit manufacturer Burton’s Foods Ltd against local retailer Boxer Superstores, ruling that the word “WHEELS” alone cannot be exclusively claimed by the makers of the popular Wagon Wheels snack.

The Dispute

Burton’s Foods, which owns the registered trade mark “WAGON WHEELS” for biscuits and confectionery in South Africa, opposed Boxer Superstores’ application to register two logo trade marks containing the word “WHEELS”. The British company argued that Boxer’s use of “WHEELS” would likely confuse consumers.

Both trade marks cover identical goods in the confectionery market, including biscuits and cookies, setting up a direct clash between the established international brand and the local retailer’s proposed marks.

Representations of the two trade marks filed by Boxer Superstores

Legal Battleground

The case hinged on Section 10(14) of South Africa’s Trade Marks Act, which prevents registration of marks that are identical or confusingly similar to existing registered trade marks covering the same or similar goods. Burton’s Foods contended that “WHEELS” was the dominant element that consumers would focus on, creating a likelihood of confusion with their well-known Wagon Wheels brand.

The court was required to assess whether ordinary consumers might be deceived or confused when encountering products bearing the “WHEELS” mark, potentially mistaking them for Wagon Wheels products.

Court’s Decision

In a ruling that will be closely watched by brand owners, the court found that the marks were sufficiently distinct both visually and aurally. Crucially, the judgment emphasised that “WAGON” was the dominant element in Burton’s composite mark, while “WHEELS” dominated in Boxer’s proposed marks.

The court rejected Burton’s Foods’ claim to exclusive rights over the individual word “WHEELS” within their composite trade mark. Despite acknowledging that the goods were identical and that some less attentive consumers might exist in the market, the court concluded that the use of “WHEELS” alone would not create a likelihood of confusion with “WAGON WHEELS.”

Industry Implications

This decision reinforces important principles in South African trade mark law regarding composite marks and the extent to which proprietors can claim exclusive rights to individual elements within them. The ruling reaffirms that courts will take a holistic approach when assessing likelihood of confusion, considering the overall impression of marks rather than focusing solely on shared words or elements.

For brand owners, the case serves as a reminder that registration of a composite trade mark does not automatically confer exclusive rights to each individual component. Companies seeking broader protection may need to consider filing separate applications for key elements of their brands.

Source: https://www.adams.africa/dale-healy/wheels-of-justice-court-lets-boxer-roll-over-wagon-wheels-in-trade-mark-case/